Patents and utility models

Currently, Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, and Turkmenistan are members of the Eurasian Patent Convention. Moldova left the Convention on February 27, 2012, but the patents registered on the base of applications filed before that date, are valid.

The time limit for entering the national phase in Russia is 31 months from the priority date (the earliest priority date if several priorities are claimed), and if no priority is claimed - 31 months from the filing date of the international application.

The time limit for other post-Soviet countries are as follows:

The rights of the applicant with respect to an international application in Russia can be reinstated during 12 months upon the applicant’s request. The request should state the reasons for not meeting the time limit. The official fee charged for the reinstatement amounts to 5,000 RUB.

The time limit for entering the regional phase before the Eurasian Patent Office is 31 months from the priority date or the earliest priority date of several claimed priorities; if no priority is claimed, the time limit is 31 months from the filing date of the international application. The said time limits can be reinstated within 12 months on the applicant’s request in case the Patent office acknowledges the validity of the reason for the delay. The official fee for the reinstatement amounts to 25,000 RUR.

This requirement (to file the request for substantive examination within the same time limit as the application) only applies to PCT Eurasian regional phase applications. For other types of applications, the examination request should be filed during 6 months from the date of the publication of the patent application.

In both Russian and Eurasian Patent Offices, the processing of a PCT national (regional) stage application may start before the expiration of the 31-month time limit in case the applicant makes an express request to the Patent Office.

Although foreign filing license as a separate notion does not exist, all inventions and utility models created in the territory of the Russian Federation should be first filed in Russia and are subject to a six-month security check before going foreign (6 months from the filing date). The applicant may request to reduce this term, whereas such reduction is at the discretion of the authorities.   

It is mandatory according to Russian legislation that foreign applicants be represented before Rospatent (RUPTO) by a Russian patent attorney who is entered onto the Russian Register of Patent Attorneys.

Similarly, for prosecution of a Eurasian patent application, applicants having no residence or principal place of business in the territory of any State party to the Eurasian Convention are required to be represented by a registered Eurasian patent attorney.

To be successfully guided through intricacies of national and regional regulation and to ensure the widest possible scope of protection, it is important for the applicant to retain an experienced patent attorney skilled in the specific technical field.

There are three different ways of accelerating prosecution of patent applications in Eurasian Patent Office:

1. PPH pilot programs between EAPO and EPO, between EAPO and the Patent Offices of Japan and China have been launched. A PPH pilot program with the Korean Intellectual Property Office of the Republic of Korea (KIPO)  started in 2019.
2. In addition to the signed PPH programs, the Eurasian Patent Office adopted a Pilot Program of accelerated processing of PCT regional phase applications. On the applicant’s request, the substantive examination of the application shall take into consideration work products of the international phase prepared by several major Patent Offices including some of those with which EAPO does not have PPH programs. EAPO shall issue the first office action or allowance/rejection decision within 3 months from the acceptance of the request.
3. Accelerated prosecution of Eurasian patent applications is available to applicants for an additional fee. The formal examination can be completed in 10 days. In case accelerated substantive examination is requested, the Eurasian patent office undertakes to dispatch the first official communication within 3 months from the acceptance of the request.

One of the ways to accelerate patent prosecution in Russia is the Patent Prosecution Highway (PPH). Currently, the Russian Patent and Trademark Office (RUPTO) has pilot PPH programs with the European Patent Office and the Patent Offices of Japan, US, Korea, Finland, Spain, Denmark, China and Portugal. According to the signed agreements, RUPTO’s patent examiners will take into consideration PCT and national/regional work products. Filing the PPH request, the client may count on receiving fewer office actions and consequently decreasing the term of prosecution.

Another way is the RUPTO’s paid service allowing the applicant to receive the search report within 10 working days. The search results allow to decrease the term of issuing the first office action or the decision of grant down to 2 months. The official tariff charged for this service amounts to 96,000 RUR.

A divisional application can be filed to the Russian PTO:

• at any time during the prosecution and, if the patent is granted, before the date of the registration of the patent;
• in case of refusal, during the statutory time period allowed for challenging the decision of refusal, that is:
  • 7 months from the date of the dispatch of the decision of refusal or
  • 7 months from the date of the dispatch of the cited references provided that they have been requested within three months from the dispatch of the decision of refusal.

A divisional application can be filed to the EAPO:

• at any time during the prosecution and, if the patent is granted, before the date of the registration of the Eurasian patent;
• in case of refusal, during the time period allowed for challenging the decision of refusal, that is within three months from the date of receipt by the applicant of the notification on refusal.

One of the convenient features of the Eurasian patent system is the absence of a separate validation procedure. The patent holder chooses the countries in which the patent should be valid simply by paying the next annuities. The annuities are paid to the Eurasian Patent Office, and the patent is automatically valid in all the countries for which the payments have been effected.

And even if a patent is declared invalid in some countries due to non-payment of the annuities, it can be reinstated in any of the countries within three years.

In case more than five years have lapsed between the filing date of an application for an invention related to a medication, pesticide or agrochemical (if its use requires authorization) and the date of the first marketing authorisation, the term of the patent shall be extended upon request of the patent owner by the Russian Patent and Trademark office. The term shall be extended for the period counted from the filing date of the patent to the date of the first authorisation minus five years, with the proviso that the term of the patent may not be extended for a period exceeding five years.

The request for extension of the term should be submitted by the patent owner during the term of the patent’s validity within six months after obtaining the first authorisation or of the patent grant, whichever comes last.

The Eurasian Patent office does not allow that the claims of a divisional Eurasian application contain inventions identical to the inventions claimed in the initial Eurasian application (unless the divisional application is filed in response to a non-unity objection).  

The RUPTO, on the contrary, allows filing a divisional application with the claims identical to those contained in the initial Russian application. The claims can be amended later on during the processing of the application.

This opportunity may be used by an applicant unsure about the scope of claims, but pressed by the deadline. At the same time, the applicant should note that the official fees for the examination will be charged based on the total number of independent claims.

This decision should be made on a case-by-case basis, depending on the subject matter and goals of patenting, as well as taking into account the specifics provided in the table below.

As one can see from the table, only a device can be protected as a utility model. At the same time, invention patents grant protection to devices, chemical substances, strains of microorganisms, cell cultures of plants or animals as well as methods. For example, if there is a need to obtain patent protection for a chemical substance, one should file an application for the invention rather than for the utility model.

As far as such patentable object as device is concerned, we should point out that one can obtain a utility model patent easier than an invention patent, since the utility model is not required to have the inventive step (unlike the invention). Thus, in order to get a utility model patent, one could take two previously known devices and merely combine them, also proving novelty and industrial applicability. Inventive step is not required in this case.

However, the extent of legal protection of an invention is somewhat broader than the one of a utility model, because the assessment of infringement of IP rights includes equivalents doctrine.

When choosing between a utility model and an invention patent, one should also consider the risk of patent invalidation. Since inventions have to satisfy the additional patentability requirement of inventive step (obviousness), possible invalidation actions can have additional grounds – lack of inventive step. Therefore, in some cases, utility model patents can be considered as potentially more stable.

Patent applications for inventions created in the Russian Federation can be filed in a foreign country (to an international patent organization) upon expiration of six months from the date of filing the respective application with RUPTO provided that within the indicated term the applicant is not notified of the fact that the application contains state secret data. Application for invention or utility model can be filed before the expiration of the above mentioned six month period in case the clearance for state secret data has been performed at the applicant's request.

Yes, Russian and Eurasian patents based on the same priority application may coexist with slightly different or even identical sets of claims. However, it is important to note that a Eurasian patent covers eight countries, including the Russian Federation (in case of timely payment of patent annuities in the relevant countries). That is why obtaining both Russian and Eurasian patents based on the same priority application is usually redundant and it entails rightholder’s additional expenses connected with filing, prosecution and then maintaining the patent in force. However, this may prove practical for specifically important inventions in respect of which the risk of opposition is very high.

Patent infringement litigation and invalidation proceedings in Russia are totally bifurcated and therefore, if an infringement action is initiated, invalidity arguments are not considered in the proceedings and cannot be asserted as a defense in patent infringement cases.

Moreover, currently the courts do not suspend infringement litigation if an invalidation action is filed with the RUPTO after the infringement suit has been brought.

As to invalidation proceedings, there is no such grounds for invalidity as inequitable conduct. The applicant does not face any repercussions in terms of patent validity for not disclosing any information known to him that would contradict patentability of the invention.

Computer programs (software) are not considered inventions per se, but a software algorithm may under certain conditions be patented in the form of a method (method of processing, transmitting, converting data, etc.). Under Russian legislation, a patentable method consists in carrying out actions over material objects with the help of material means. An application for the grant of an invention patent may relate to an algorithm of a computer program described in the form of a sequence of actions on signals (material objects) providing a technical result achieved by means of a computer device (material means). In such cases, there are grounds for recognizing the claimed object as a technical solution having a technical result.

There is a so-called six month novelty grace period. The disclosure of information relating to the invention by the inventor, applicant or by any person having obtained the information directly or indirectly from them (including when invention is displayed at an exhibition), as a result of which information on the subject matter of the invention has become publically available, does not destroy the novelty of the invention provided that the patent application was filed with RUPTO within six months from the date of the  information disclosure.